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Study Guide to the Patents Acts 13th Edition

STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

Doug Ealey 2021

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13th Edition 28/06/2021 12:24:57

STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

13th Edition

The moral rights of the author have been asserted. All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. © Doug Ealey, 2008-2021 Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20 – 23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

ISBN 978-0-903932-71-4 Printed and bound by Mimeo – www.mimeo.co.uk v.1-200621

For James, with thanks

Foreword to the 13th Edition This book sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a straightforward reference that can be readily learnt by students taking the closed-book UK exams, and in particular FD1. Hence it tries to replicate what (and how) a good student would remember the relevant law and practice after reading the source texts. References to the Black Book are to the 9th edition, with further references to the first supplement as applicable. It will be appreciated that a book which seeks to streamline and selectively present aspects of the law omits many subtleties, and is not itself a basis for legal advice. In spite of the care taken during the preparation of the book, the author does not accept any responsibility for errors. Any comments on errors, or suggestions for improvement, are welcomed at the ‘P2 / FD1 Study Guide’ group on LinkedIn. This group, which is open to anyone to browse / join, also provides the opportunity to discuss exam issues with fellow students, and includes links to further resources and suggested revision time-tables to help synchronise the discussion process. This 13th edition coincides with changes to the IP world caused by Brexit; as a result updates have been made throughout the book, and in particular to the designs section. Finally, as ever my gratitude goes to Iain Ross for his work in publishing the book, and to the Patent Examination Board for their permission to reproduce exam questions. Doug Ealey Southampton, April 2021

Contents

Part 1 UK Law...............................................................1 Table of Rules.................................................2 UK Patents Act...............................................3 Designs........................................................ 135 Part 2 Overseas Law.............................................159 Paris Convention....................................... 161 European Patent Convention................162 Patent Co-operation Treaty................... 177 United States.............................................182 Japan............................................................193 Part 3 Guidelines to Taking P2.......................... 199 Revision.......................................................201 Reading a P2 question............................204 Writing a P2 answer................................. 224 Worked Example....................................... 237 On the day.................................................. 245 Part 4 Common forms.........................................250 Amendment and Correction..................251 PCT Timelines...........................................256 GB Timelines..............................................259 EP Timelines.............................................. 263

Part 1 UK Law Table of Rules............................................ 2 1.1 UK Patents Act ................................... 3 1.2 Designs.......................................... 135

Study Guide to the Patents Acts (2021 edition)

Table of Rules Key: Rule No, Recited in section No, Referenced in Section No R3 5 R6 5, tables R7 5, 18 R8 5, 8 R9 5 R10 13 R11 13, 24, 32 R12 14 R15 14 R16 14 R17 15 R18 15 R19 15, 18 R20 8, 37 R21 8, 15, 17 R22 15, 17 R23 15A R24 15A R26 13, 16 R27 17 R28 18, 16 R29 18 R30 18, 8, 15-17, 20, 21, 117B, tables R31 19, 7, tables R32 20A R33 21 R34 24 R35 27, 75 R36 25, 46 R37 25 R38 25 R39 25 R40 28 R41 25 R42 29

R43 R44 R45 R46 R47 R48 R49 R50 R51-55 R58 R65 R66 R67 R68 R69 R70 R72 R73-87 R89 R90 R91 R92-97 R98-100 R101 R103 R104 R105 R107 R108 R109 R110 R111 R113 R114 R115

46, 47 32 32 32 32, 7, 13 32 32, 34, 117, tables 32, 7, 34, tables 118 81 89B 5 2 13, 15, 17, 18, 89A 89A 89A 89 Proceedings Proceedings, 46, 47 Proceedings, 11, 38 Proceedings, 40 74A 74B 32 32 32 117, 7, R75, tables 117 117B, 13, 15, 18, 77, 117, tables 117B 120 120, 119 15, 81 Proceedings Proceedings

Part 1: UK Law

UK Patents Act · section 1

1.1 UK Patents Act This first part of the book provides a simplified version of the UK patents act that is written to be easy to understand and memorise. It aims to replicate what a good candidate would remember from the source texts for the closed-book FD1 exam. In addition, legal and practical matters relevant to the exam are discussed as appropriate in notes for each section of the act.

Section 1: Patentability 1) A patent will only be granted for an invention that: a) is new; b) has an inventive step; c) is industrially applicable; and d) is not excluded by subsections (2) or (3) below or section 4A (method of treatment or diagnosis). 2) At least the following are excluded as patentable inventions: a) a discovery, scientific theory or mathematical method; b) literature, drama, music, art or any other aesthetic creation; c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program; or d) the presentation of information… …as such. 3) A patent won’t be granted where the commercial exploitation of the invention would be immoral or contradict public policy. 4) ‘Immoral’ and ‘contradict public policy’ do not necessarily equate with ‘illegal’. :

Legal Notes Definitions: • What is new, inventive and industrially applicable is defined by sections 2, 3, and 4 below respectively. Other exclusions: • s1(2) is not an exhaustive list of exclusions. • s4A outlines exclusions based upon methods of treatment or diagnosis. • Schedule A2 (‘Biotechnological Inventions’), introduced by s76A, also excludes from patenting:

Study Guide to the Patents Acts (2021 edition)

Designs

1.2.10 Trade marks • Finally, don’t forget that a trade mark depicting an object can also be a useful protection that is not subject to disclosure or grace period restrictions, though it is important that the features relied upon do not derive from a technical function. Contrast Lego Juris A/S v OHIM, case C-48/09 P, where Lego’s proposed trade mark was considered to perpetuate an effective design right in an object shaped by technical considerations (a 2x4 Lego brick), with the recent decision of Lego A/S v EUIPO, case T‑515/19, where the item of Lego had a characteristic arrangement of studs and blank spaces that meant the overall appearance of the object was not considered to be solely dictated by technical function. • Also note that, like community registered designs, the UK is no longer party to EU registered trade marks, but has re-registered the UK portion of such existing rights.

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Part 1: UK Law

Part 2 Overseas Law 2.1 Paris Convention............................ 161 2.2 European Patent Convention....... 162 2.3 Patent Co-operation Treaty .......... 177 2.4 United States................................ 182 2.5 Japan............................................. 193

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Paris Convention •

2.1 Paris Convention The most important part of the Paris Convention for the purposes of FD1 is Article 4, which lays out the minimum requirements for recognising priority amongst Paris Convention states, and hence PCT, EP and UK priority claims. The relevant parts are:

Article 4

Right of Priority

A(1)(2) Anyone can claim priority from their regular national filing in a convention state of a patent, utility model, industrial design or trade mark. (3) A ‘regular national filing’ means a filing sufficient to obtain a filing date, irrespective of what then happens to that application. B A subsequent filing claiming the priority will not be invalidated by any intervening publication, exploitation or other act that might otherwise do so. C(1)(2) Patents and utility models can claim 12 months priority, and industrial designs and trade marks can claim six months, each from the date of filing of the first application. (3) The above periods extend to the next working day if the relevant filing office is not open. (4) A subsequent national filing for the same matter can be treated as the first application if: – it is filed in the same country as the previous application, and – the previous application is withdrawn / abandoned / refused… – without publication, – leaving no rights outstanding, – without itself having served as a basis of priority, and – before the subsequent filing; and the previous application may not subsequently also be used as a basis of priority. D(1) To obtain priority, you must make a declaration stating the date of filing of the first application and the country it was made in. (3) You may then be required to supply a certified copy of the first application (and a translation if needed) within three months. E(1)(2) You can file a patent claiming priority from a utility model within 12 months, and vice versa. However, if you file an industrial design claiming priority from a utility model, you only get the industrial design’s six-month priority period. F Multiple priorities are allowed. G Divisional applications inherit their parent’s priority date. H Priority is based on the first application as a whole, not just on its claims.

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Japan – A more general FAQ is also provided by the EPO: https://www.epo.org/searching-for-patents/helpful-resources/asian/japan/faq.html – A brief summary of the JP system can also be found at the JPO website: https://www.jpo.go.jp/e/system/patent/gaiyo/patent.html – For more detail, the Examination Guidelines are also available in English at: https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/tukujitu_kijun/index.html – Finally, an English translation of the Japanese Patent Act is available from: https://wipolex.wipo.int/en/text/532862

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Part 2: Overseas Law

Part 3 Guidelines for Taking FD1 3.1 Revision...........................................201 3.2 Reading an FD1 question............... 204 3.3 Writing an FD1 answer................... 224 3.4 Worked example.............................237 3.5 On the day..................................... 245

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Revision

Introduction Part 3 is intended to help your exam technique for FD1. However it makes no assumptions about what aspect of the exam process (if any) you may want advice upon, and so attempts to cover as many angles as possible. Consequently, whilst some of Part 3 may be useful to you, other parts may appear pointless or even patronising – so just take what appears useful and forgive the rest.

3.1 Revision 3.1.11 Revision Resources • The current syllabus for FD1 can be found by Googling ‘peb fd1 syllabus’ or visiting https:// peb.org.uk/patent-examination-board/support/syllabi-for-2021/. The Patent Examination Board (PEB) also provide examination guidance outlining the skill set that the exam tests for. Hence whilst this book is intended to cover the legal references in the syllabus, PEB also usefully outlines the qualities being tested in candidates, the assessment criteria used, and the desired learning outcomes, and presents a thematic grouping of the legal references. Finally, it also provides a comprehensive recommended further reading list. • Useful books include: – The CIPA Guide to the Patents Acts (the ‘Black Book’) – this is the authoritative source from which to learn UK law. This study guide contains references to the 9th Edition and 1st Supplement. – The Manual of Patent Practice (available from the UKIPO Website), provides clear commentary, albeit from a patent examiner’s perspective, – The Annotated European Patent Convention (‘Visser’) for EPC and PCT references, or References to the European Patent Convention (‘Hoekstra’) for EPC references; and – The PCT Applicant’s Guide for US and JP prosecution and further details on PCT prosecution. • Past papers, example scripts and Examiner’s reports for the last 15 or so years can be found by Googling ‘peb fd1 past papers’. • The CIPA Informals lecture series is useful, and for those located outside London, recordings and slides of the lectures can be downloaded from CIPA (see https://www.cipa.org.uk/pages/informals). In addition CIPA also organises a tutorials roster, although this year it may well not occur, for obvious reasons. • Other online resources include the excellent cross-linked guide to the EPC and PCT at https://xepc.eu/ • Commercial residential training courses are also available, although these should generally be treated as a consolidation of your revision, and not as a starting point. • Finally, as a complement to this book a study schedule and open discussion group is available on LinkedIn (search LinkedIn groups for ‘P2 / FD1 Study Guide’), providing the opportunity to revise and discuss exams together, and to ask questions. No sign-up to the group is required to view it.

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On the day

3.5.31 Final thoughts Recall that the advice in this part of the book is generic, so do what feels right for you and please share any useful techniques or tips you may have with the discussion group on LinkedIn (search there for ‘FD1 / P2 Study Guide’). Finally, remember that if you’ve got into the profession and as far as taking the FD1 exam, then the odds are that you are capable of passing it! Keep at it, and good luck.

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Part 3: Guidelines for Taking FD1

Part 4 Tables

4.1 Common forms.............................. 250 4.2 Amendment and Correction.......... 251 4.3 PCT Timelines............................... 256 4.4 GB Timelines................................. 259 4.5 EP Timelines.................................. 263

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UK Forms

4.1 Common Forms Costs given relate to e-filing where appropriate. PF 1 Application for grant of patent – see s14 – due with filing (s.15). Fee due by 12 months from priority or two months from filing. Fee is £60 if paid at filing or £75 with form AF1 if paid later. PF 2

Initiate proceedings before comptroller – See R76 – e.g. infringement or revocation. £50.

PF 3

Late declaration of priority / late filing – see s5 for details & costs

PF 7

Statement of inventorship – see s7 – due 16 months from priority (s13) or on filing divisional or s8/37 app.

PF 9A Request for a Search – see s17 – due 12 months from priority or two months from filing. £150 for UK applications, plus £20 for each claim over 25. PF 10

Request for substantive examination – see s18 – due six months from publication. £100, plus £10 for each page (of the description only) over 35.

PF 12

Payment of renewal fee – see s25 for details – note that anyone can pay a renewal fee.

PF 14

Request for reinstatement – see s20A – due to missed prosecution deadline. £150.

PF 16

Request for restoration – see s28 – due to late renewal payment. £135.

PF 17

Request an opinion – see s74A – fee £200.

PF 21

PF 49

Request a caveat – see s2 & s25 – fee £25.

PF 51

PF 52

Request an extension under R108 – see s117B – due within two months of deadline. £135.

NP1

National Phase entry – see s89A – due at 31 months from priority for a PCT application. Fee of £30 due at 33 months, and £12 translation publication fee if needed.

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Part 4: Tables

Amendment and Correction

4.2.1 Amendment and Correction of a Patent GB

EPC

Voluntary amendments

s27: Comptroller has discretion to allow amendment unless any proceedings are pending that may affect validity. Amendments are retroactive to the date of grant. Third parties can oppose amendments.

A105A: Proprietor can request central revocation or limitation (by amendment), unless opposition proceedings are pending. The limitation is fully retroactive (ab initio).

Other amendments

s75: Comptroller or court has discretion to allow amendment during revocation or infringement proceedings. Again the amendments are retroactive to date of grant. Third parties can oppose.

R80: Amendment is possible during opposition proceedings, but only where occasioned by a ground of opposition (even if not raised by opponent).

Restrictions

s76: The scope of protection is not broadened, and there is no added matter.

A105B: The amendment narrows the claims, the resulting claims are clear, and there is no added matter.

Correction to specification

s80(3): An error in translation can be corrected after grant. However, where the correction results in a broader scope of protection, that broader scope is not retroactive and third party rights may exist.

A14(2): An error in translation can be corrected throughout proceedings at the EPO, including during opposition.

s117 and R105: Correction must be obvious and unambiguous. The correction can be advertised, and third parties can oppose within four weeks.

R139: Correction must be obvious and unambiguous.

s117: Corrections can be non-obvious, but must clearly identify what is being corrected. The correction can be advertised, and third parties can oppose within four weeks.

R139: Corrections can be non-obvious.

Correction to a form or other document

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Study Guide to the Patents Acts 13th Edition

STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

Doug Ealey 2021

0_Cover_Ealey_Spread.indd 1

13th Edition 28/06/2021 12:24:57